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Friday, 12 October 2007

Having briefly recorded the existence of Wednesday's England and Wales Court of Appeal decision in Procter & Gamble Co v Reckitt Benckiser (UK) Ltd[2007] EWCA Civ 936 (Lords Justices May, Dyson and Jacob - who gave the court's judgment), the IPKat is returning to it now.

In short, this was RB's appeal against the decision that P&G's registered Community design registration (shown in part, right was valid and infringed by its Airwick air freshener container (below, left).

For air-fresh junkies, P&G's own product, "Febreze" (below, right), was packaged in a custom-designed canister surmounted by a trigger within a housing. At trial, Lewison J agreed with RB that the overall impression of a design is what sticks in the mind of the consumer after it had been carefully viewed, but he found that Airwick infringed P&G's design. On appeal, RB submitted that the judge had erred since he had said that the overall impression of each product was different and ought therefore to have found that there was no infringement. On that basis the Court of Appeal should make up its own mind.

Allowing RB's appeal on infringement but not on the issue of validity, the court said this:

* infringement is avoided where the design of the allegedly infringing product gave a different overall impression - but different didn't mean "clearly" different" (as the trial judge had thought);

* the impression has to be that of the notional "informed user", who would be taken to be "fairly familiar" with design issues;

* protection for a striking novel product would be correspondingly greater than for a product which was just a little bit different from its predecessors;

* in comparison of designs - unlike comparison of trade marks - there was no great need to take into account the imperfect recollection of the viewer;

* the "overall impression" of a registered design - and of an allegedly infringing product - has to be established with care, the generality to which the court had to descend being that of the notional informed user;

* if the overall impression of each is different, there is no infringement;

* in this case Lewison J didn't apply his own impressions, but applied a "stick in the mind" test instead of the more appropriate "what would impress now" test; he also approached the dominant features of the design at too general a level.

Jacob LJ had no worries - unlike Lewison J - that a poor quality imitation would escape infringement. If a poor quality imitation did not convey the same impression as the original, that was because of its own design merits.

This member of the IPKat team is struggling with all this. For one thing, he finds it difficult to believe that the drafters of the Community design right legislation could ever have intended courts to submit themselves to such a complex set of mental exercises in order to reach the decision which most people probably reach straight away on the basis of subjective evaluation or intuition - that the alleged infringing product either does, or doesn't, look as if it's been copied from the registered design. For another, whatever reasoning is adopted in legal terms, his low level of visual acuity results in him finding it very difficult not to see the one as a copy of the other - but then, he's not the notional "informed user". He'd certainly think twice before suing anyone for registered Community design infringement unless there was a total correspondence between the protected design and the alleged infringing product.

Right: Snowy thought her owners had bought her a new caravan for her birthday, till she realised it had no wheels ..

Let's not forget how excited we used to get about whether coloured detergent tablets were registrable as trade marks. Limping through to the European Court of Justice is Case C-144/06 Henkel KGaA v Office for Harmonisation in the Internal Market , decided last Tuesday, 9 October.

Henkel applied, back in 1998, to register as a Community trade mark a two-dimensional colour representation (left) of a three-dimensional detergent tablet, in respect of, inter alia, "dishwashing preparations and rinsing agents for laundry use" in Class 3. The examiner, Board of Appeal, Court and First Instance and now the full Court of Justice have all concluded that the mark was unregistrable, being devoid of distinctive character in respect of the goods for which registration was sought. Said the Court:

"32 In the first place, Henkel complains that the Court of First Instance erred in law in its assessment of the requirement that the mark applied for be distinctive.

36 ... the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark. However, when those criteria are applied, account must be taken of the fact that the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark ...

40 ... the Court of First Instance correctly identified, and applied to the situation in this case, the criteria established by the case-law.

41 The Court of First Instance was fully entitled, first, to review the different elements of the appearance of which the mark applied for is a representation, including the shape and the colours of the tablet, and subsequently to analyse the overall impression given by the mark, in order to assess whether or not that mark fulfils its function of indicating origin.

42 Having undertaken ... an examination, in turn, of the rectangular shape of the mark applied for, its two coloured layers and its oval blue centre situated in the middle of the upper red face of the tablet, the Court of First Instance held that those elements did not suffice to confer a distinctive character on the mark.

43 As regards the assessment of the elements taken as a whole, the Court of First Instance held ... that ‘the overall impression given by the sign in issue is limited to a representation of a washing-machine or dishwashing product in the shape of a tablet grouping together several active chemical agents in a decorative and attractive manner in two coloured layers of red and white, with the red layer featuring an oval blue centre. Since the consumer is not accustomed to finding an indication of the commercial origin of a product in its shape and colours …, since the presence of two layers and the addition of an oval centre in a different colour is one of the most obvious solutions for the design of a washing-machine or dishwashing product in the form of a tablet … and since, as basic colours normally used in the sector concerned, the colours chosen are not of a kind to attract the consumers’ attention …, the overall impression given by the sign will not indicate to the targeted public that the actual depiction of the product reveals its commercial origin. Therefore, the mark applied for does not enable the average consumer of such goods, who is reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical or comparative examination and without paying particular attention …’.

44 It thus appears, first, that the Court of First Instance based its assessment as to whether the mark applied for has distinctive character on the overall impression which is conveyed by the shape and the arrangement of the colours of that mark, and, second, that it established that that mark does not make it possible to distinguish the product from those of competitors in the sector in question.

45 ... the Court of First Instance did not commit an error of law in relation to either that provision or the relevant case-law of the Court of Justice".

The IPKat wonders whether this will be an end of the European coloured tablet saga, but suspects that it will not.